USPTO Patents Application 09870801

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L0 FA1 415 394 0134 KEKER & VAN NEST LLP 1^1002

CEKER & VAN NEST, LLP
roHNW. KEKER -#49092
IENRY C BUNSOW - #60707
[ON B. STREETER - #101970
MICHAEL H. PAGE - #154913
StAGESH K. TANGRI - #159477
710 Sansome Street
San Francisco, CA 941 1 1-1 704
relephone: (415)391-5400
Facsimile: (415)397-7188

FTNNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
CHRISTOPHER P. ISAAC
1300 1 Street, N.W.
Washington, D.C 20005-3314
Telephone: (202)408-4000
Facsimile: (202)408-4400

Attorneys for Plaintiff

INTERTRUST TECHNOLOGIES CORPORATION

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA

INTERTRUST TECHNOLOGIES

CORPORATION,

a Delaware corporation,

Plaintiff,

MICROSOFT CORPORATION, a
Washington corporation,

Defendant

Case No. C 01 1640 JL

SECOND AMENDED COMPLAINT FOR
INFRINGEMENT OF U.S. PATENT NOS.
6485,683 Bl AND 6,253,193 Bl; 5,920,861;
5,940, 504

DEMAND FOR JURY TRIAL

Plaintiff INTERTRUST TECHNOLOGIES CORPORATION (hereafter "InterTrusf )
hereby complains of Defendant MICROSOFT CORPORATION (hereafter "Microsoft"), and
alleges as follows:

2nd AM. CMPLT FOR INFRINGEMEN T OF U.S. PATENT NOS. 6,185,683 Bl; 6,253,193; 5,940,504 Bl & 5, 920,861

CASE NO. C 01 1640 JL

08/10/2001 10:10 FAX 415 394 0134,

KEKER & VAN NEST LLP

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nmismCTlOy AND VENUE

1 . This action for patent infringement arises under the patent laws of the United States,
Title 35, United States Code, more particularly 35 U.S.C. §§ 271 and 281.

2. This Court has subject ma^^ §§ 1331 ^ d 1338(a).

3. Venue is proper in this judicial district under 28 U.S.C. §§ 1391(c) and 1400(b).

THE PARTIES

4. Plaintiff InterTrust is a Delaware corporation with its principal place of business
at 4750 Patrick Henry Drive, Santa Clara, California.

5. InterTrust is informed and believes, and on that basis alleges, that Defendant
Microsoft is a Washington Corporation with its principal place of business at One Microsoft

Way, Redmond, Washington.

6. InterTrust is informed and believes, and on that basis alleges, that Defendant
Microsoft does business in this judicial district and has committed and is continuing to commit
acts of infringement in this judicial district

7. InterTrust is the owner of United States Patent No. 6,1 85,683 Bl, entitled
'Trusted and secure techniques, systems and methods for item delivery and execution" ("the
'683 patent"), duly and lawfully issued on February 6, 2001. A copy of the '683 patent is

attached hereto as Exhibit A.

8. InterTrust is the owner of United States Patent No. 6,253,193 Bl. entitled
'Systems and methods for secure transaction management and electronic rights protection" ("the
•193 patent"), duly and lawfully issued on June 26, 2001 . A copy of the* 193 patent is attached

hereto as Exhibit B.

9. InterTrust is the owner of United States Patent No. 5,940,504, entitled "Licensing
management system and method in which datagrams including an addressee of a licensee and
indicative of use of a licensed product are sent from the licensee's site" ("ft. '504 patent"), duly
and lawfully issued on August 17. 1999. A copy of the '504 patent is attached hereto as Exhibit
C.

10. InterTrust is the owner of United States Patent No. 5.920,861, entitled

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KEKER & VAN NEST LLP

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as Exhibit D.

TTTRKT CLAIM FOR RELIEF
U InterTrust hereby incorporates by reference paragraphs 1-7 as if restated herein.
12. This is a claim for patent infringement under 35 U.S.C.§§ 271 and281.
13 interest is

been and is infnngingtho '683 patent under § 271(a) by making and using systems incorporating
Windows Media Player Versions 7 and 8. In addition, on information nd belief, InterTrust
10 Lieges that Microsoft is making andusing other systems and/or is in the process of developmg
U omersy S tem S ,whichinfHngeth e '683patentunder§27l(a). InterTrust is fcrther informed and

12 believes, and on that basis alleges, that Microsoft's mfringement of the '683 patent under

13 §271(a) will continue unless enjoined by Ibis Court.

14 14 in^TmstUhrfonncdandbdieves.^donthatbasisalleges.ftKMic^ofth^

K L71(.)>«reb y inducin B ii^ 8 =m=n.of*.-683p^ ra dcr8271(b). Integra* is furdw

17 informed and believes that Microsoft's inducement has a. leas, included .he manner in which

18 Microsoft has promoted and marketed use of Windows Media Playerversions 7 and 8.

19 J InterTrust is further infonned and bebeves, and on that basis alleges, that Microsoft's

20 inftingemen. of the '683 paten, under 5271(b) will continue unless enjoined by this Court..

21 I 15 toterTn^isfofonnedandbeUeves.a.Kion^

23 managementsoftware andrelated foncttons especiallytnade or especially adapted forinnrngmg

24 use and not sttple articies or commodities of commerce suitable for subaantial noninffingm B

25 Lincludinga«leas.WindowsMediaPU l y a VaBions7and8. IMerTrus. is further infonned

27 §271(c) will continue unless enjoined by this Court.

,J ,6. w^n^isinformen^be.ieves.andonuu.b^a.leees.u^Microsof.is

08/10/2001 10:11 FAX 415 394 0134

KEKER & VAN NEST LLP

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18.

willfully infringing the '683 patent in the manner described above in paragraphs 13 through 1 5,
and will continue to do so unless enjoined by this Court

17. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
derived and received, and will continue to derive and receive from the aforesaid acts of
infringement gains, profits, and advantages, tangible and intangible, the extent of which are not
presently known to InterTrust. By reason of the aforesaid acts of infringement, InterTrust has

been, and will continue to be, irreparably harmed. .

SFCOND CLA IM FOR RELIEF
InterTrust hereby incorporates by reference paragraphs 1-6 and 8 as if restated

] lerein.

19. This is a claim for patent infringement under 35 U.S.C. §§ 271 and 281.

20. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
been and is infringing the '193 patent under § 271(a) by using Windows Media Player Versions
7 and 8. In addition, on information and belief, InterTrust alleges that Microsoft is making and
using other systems and/or is in the process of developing other systems, which infringe the ' 193
patent under § 271(a). InterTrust is further informed and believes, and on that basis alleges, that
Microsoft's infringement of the '193 patent under §271(a) will continue unless enjoined by this
Court

21. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
been and is knowingly and intentionally inducing others to mfringe directly the * 193 patent under |
§ 271(a), thereby inducing infringement of the '683 patent under § 271(b). InterTrust is further
informed and believes that Microsoft' « inducement has at least included the manner in which
Microsoft has promoted and marketed use of Windows Media Player Versions 7 and 8.
InterTrust is further informed and believes, and on that basis alleges, that Microsoft's
infringement of the '193 patent under §271(b)wiU continue unless enjoined by this Court

22. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
been and is contributorily infringing the '193 patent under § 271(c) by providing digital rights
management software and related functions especially made or especially adapted for infringing

2T390B.02

2nd AM. CMPLT FOR INFRINGEMENT OF ^jj^^j^^ yj^^Q jjl^ ^ "

08/10/2001 10:11 FAJ 415 384 0134

KE KER & VAN NEST LLP

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use and not staple articles or comrnodities of — e suitable for substantial .oninfnnging
^including Min^li^W^^ 1 ^*^^

^ b e UOT e 6 , a ndon,ha,b^d 1 .g«,«M iOT sorsi»«n6=me tt tof*e-193 patent^

§271(c) will continue unless enjoined by thisCourt: .

23 InterTrust is informed and believes, and on that basis alleges, that Microsoft is
willfully infringing the «1 93 patent in the manner described above in paragraphs 20 throu^ 22,
and will continue to do so unless enjoined by this Court

24. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
derived and received, and will continue to derive and receive from the aforesaid acts of
infringement gains, profits, and advantages, tangible and intangible, the extent of which are not

11 llpresentlyknown to InterTrust. By reason of the aforesaid acts of infringement, MerTrust has

12 I been, and will continue to be, irreparably harmed.

THTRP CLAIM ffOR RELIEF

25. InterTrust hereby incorporates by reference paragraphs 1-6 and 9 as if restated

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herein.

26.
27.

This is a claim for patent infringement under 35 U,S.C. §§ 271 and 281.
InterTrust is informed and believes, and on that basis alleges, that Microsoft has
been and is infringing the '504 patent under § 27 1 (a) by Microsoft's use of the Product
Activation feature of Microsoft XP and other Microsoft products. In addition, on information and |
belief, InterTrust alleges that Microsoft is making and using other systems and/or is in the
process of developing other systems, which infringe the '504 patent under § 271(a). InterTrust is |
further informed and believes, and on that basis ^toUk^****^«*
504 patent under §271(a) will continue unless enjoined by this Court

28 InterTrust is informed and believes, and on that basis alleges, that Microsoft has ■
been and is knowingly and intentionally i^^*^*^*"'*****^
§ 271(a), thereby inducing infringement of the ^patent under § 271(b). InterTrnst is further
informed and beUeves that Microsoft's inducement has at least included the manner in which
Microsoft promoted and marketed use of the Product Activation feature of Windows XP and

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. FAX 415 394 0134 KEKER & VAN NEST LLP 1^007

ther Microsoft products. InterTrust is further informed and believes, and on that basis alleges,
,at Microsoft's infringement of the '504 patent under §271(b) will continue unless enjoined by
lis Court.

29. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
, een and is contributorily infringing the '504 patent under § 271(c) by providing digital rights
aanagement software and related functions especially made or especially adapted for infiinging
ise and not staple articles or commodities of commerce suitable for substantial noninfiinging
ise, including the Product Activation feature of Windows XP and other Microsoft products.
riterTrust is further informed and believes, and on that basis alleges, that Microsoft's
nfringement of the '504 patent under §271(c) will continue unless enjoined by this Court.

30. InterTrust is informed and believes, and on that basis alleges, that Microsoft is
willfully mftinging the '504 patent in the manner described above in paragraphs 27 through 29,
ind will continue to do so unless enjoined by this Court.

31. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
lerived and received, and will continue to derive and receive from the aforesaid acts of
nfringement gains, profits, and advantages, tangible and intangible, the extent of which are not
jresently known to InterTrusL By reason of the aforesaid acts of infringement, InterTrust has
jeen, and will continue to be, irreparably harmed.

FOURTH CJ FOR RELIEF

32. InterTrust hereby incorporates by reference paragraphs 1-6 and 10 as if restated

herein.

33. This is a claim for patent infringement under 35 U.S.C. §§ 271 and 281.

34. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
been and is infringing the '861 patent under § 27 1 (a) by making, using, selling, and offering for
sale digital rights management software incorporating inventions claimed in the '861 patent,
including but not limited to the Digital Asset Server and Microsoft Reader. In addition, on
information and belief, InterTrust alleges that Microsoft is making and using other systems
and/or is in the process of developing other systems, which infringe the '861 patent under §

2ndAM.CMPLTF0R]NF]U^^

CASE NO. C 01 1640 JL

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! FAX 4 15 364 0 134 KEKER & VAN NEST LLP 10008

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71(a). LiterTrust is further informed and believes, and on that basis alleges, that Microsoft's
ifriDgement of the '861 patent under §27 1(a) will continue unless enjoined by this Court.

35. InterTnist is informed and believes, and on that basis alleges, that Microsoft has
een and is knowingly and intentionally inducing others to infringe directly the '861 patent under
271(a), thereby inducing infringement of the '861 patent under § 271(b). InterTnist is further
aformed and believes that Microsoft's inducement has at least included the manner in which
Microsoft has promoted and marketed use of Digital Asset Server and Microsoft Reader.
aterTrust is further informed and believes, and on that basis alleges, that Microsoft's
afringement of the '861 patent under §271(b) will continue unless enjoined by this Court

36. InterTnist is informed and believes, and on that basis alleges, that Microsoft has
,een and is contributorily mfringing the '861 patent under § 271(c) by providing digital rights
aanagement software and related functions especially made or especially adapted for infringing
ise and not staple articles or commodities of commerce suitable for substantial noninfringing
ise, including but not limited to the Digital Asset Server and Microsoft Reader. InterTnist is
iirther informed and believes, and on that basis alleges, that Microsoft's infringement of the
861 patent under §271(c) will continue unless enjoined by this Court.

37. InterTnist is informed and believes, and on that basis alleges, that Microsoft is
villfully infringing the '861 patent in the manner described above in paragraphs 32 through 34,
md will continue to do so unless enjoined by this Court.

38. InterTnist is informed and believes, and on that basis alleges, that Microsoft has
lerived and received, and will continue to derive and receive from the aforesaid acts of
nfringement gains, profits, and advantages, tangible, and intangible, the extent of which are not
iresently known to InterTnist. By reason of the aforesaid acts of iiutingement, InterTnist has
>een, and. will continue to be, irreparably harmed.

PRAYER FOR RELIEF
WHEREFORE, InterTnist prays for relief as follows:

A. That Microsoft be adjudged to have infringed the '683 patent under 35 U.S.C. §

271(a);

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' 2nd AM. CMPLT FOR INFRINGEMENT OF U.S. PATENT N OS. 6,1 85,683 Bl: 6^^.193; 5,940,504 Bl & 5, 920,86)

CASE NO. C 01 1640 JL

08/10/2001 10:12 FAX_415 394 _013j.

KEKER & VAN NEST LLP

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Mlt-«.4**«t"t*»»' '683 plunder 35 U.S.C §
2 | 2 71(b)byinduci„ E «*-'°^e*irec.ly^-683pa««^«U.S.C. 5 271(a);

C. TWMi« 0 softb=ad i »dgc< ito hav e contibutori.y taf Kng«dthe.68 3 plunder

35U.S.C. § 271(c); . ._ - -

„. Th«Mic roS o ft b ea djud g cd,ob a vcwi 11 W.ytaM ng «'the-683p a tcn.und e r35

iU.S.C.§§ 271(a), (b), and (c);
, E Th a ,l*cro S oft,tooffie«s,a^ E «va n «,employ e e S «.da«om=y 5> andfl.ose

9 La cnjoinednndcr^U.S.C. §

10 , F. ThatMic ro sonUadjud g «i K >havcinein Be dto'193pa.cntuod e r35U.S.C.§

11 11271(a); icTTcf' k

12 . o TOa.M^.oftbaadiudgcd.ch.veiBftingcdte-WJpa^^SSU^.C. §

13 271(b) b y ind B cu, 8 o,her SK ,i«tog,din ! cay 1 hc-193pa.eot U nd tt 35U.S.a § 271(a);

14 H. TWMic^ftb.adjud ge d t ol« e con^u.orilyin« nB cd^-193pa. ro tu n d=r

15 35U.S.C. § 271(c);

16 , I. T ta ,Mic,osoftbcadjad g =d tt tav e w 1 nf»l.ymftu 1 geddie-193pa, eIItU »der35

17 |u.S.C.§§ 271(a), (b), and (c);

„ || j ThatMicrosoft. ulcers, «** -* a "° meyS ' ^ ^

yA^M^o,,.^^^***^*''^"*"*

20 Ld M i 0 incd»da35U.SX.§283^d,«cU y o r h 1 du^yh 1 n*g i ng^-,93pa te n,

21 ,1 K. Tba.Mic ro »ftl«adjudgcd,o ta veinKngedth.-504p»«n.undcr 3 5 U .S.C. 8

22 11271(a)"

\ ^,Mi OT «ftbcadiudg«i«,taven 1 fi^«lthc-504pa«n t »nder35U^C. §
2711b) by inducing other, » innings directly to "504 patcntundcr 35 U.S.C § 271(a);

35 U.S.C § 271(c);

N . ^tMicrosoftbeadju^

U.S.C. §§ 271(a), (b), and (c);

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O That Microsoft, if officers, agents, servants, emcees and attorneys, and those
persons ^^.V*^^^*"*^*'"^'**"

inf

^ enjoined under 35 U.S.C. 5 283 from direct* or indirect* infringing '504 patent;
P . That this Conn award darnageswccrnjensate Intrust for Microsoft's
irmgement, as weU as enhanced damages, pursuant to 35 U.S.C. § 284;

q That .his Court adjudge this case to he exceptional and award reasonable

attorney's fees to MerTrust pursuant to 35 U.S.CJ 285;

r. ThatMicrosoftbeadjndgedu.toveinftinsedthe'SM patent under 35 US.C. §

271(a)"

S. Th«Mi<^ftb«««^»^ fa ^ ta-M1 ^ , ° ,4er35UAC §
271(b) by inducing others to iufnnge directly the - Ml patent under 35 U.S.C. § 271(a);

T. Tha.Microsoflbeadjud^.ohaveconrnbu.orilyiniringedte-861 patentunder

35U.S.C. § 271(c);

U. That Microsoft be adjudged to have willfully infringed the '861 patent under 35

U.S.C. §§ 271(a), (b), and (c);.

V ' That Microsoft, its officers, agents, servants, employeea and attorneys, »d those

Microsoft, and aw*d such in«est and costs to hu^rus, purauan. to 35 U.S.C. § 284; and

X. That mterTrus. have such other and further relief as to. Court may deem proper.

KEKER &.VAN NEST, LLP

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Dated: July 25, 2001

A

Attorneys for Plraitiff
ENTERTRUST TECHNOLOGIES
CORPORATION

2nd AM. CMPLT FOR INFRINGEMENT OF C 01 1640 JL

273908.02

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FAX 415 394 0134 KKKER & VAN NEST LLP 1^1 Oil

DEMAND FOR JURY TRIAL

Plaintiff InterTrust berby demands a trial by jury as to all issues triable by jury,
.ecifically including, but not limited to, the issue of infringement of United States Patent No*.
185,683 Bl; 6,253,193 Bl; 5,940,504; ani5 T 920,86L

** My 25.2001 KEKER& VAN NEST, LLP

jOkbtstreeter

Attorneys for Plaintiff .
1NTERTRUST TECHNOLOGIES
CORPORATION

08/10/2001 10:13 FAX 4 15 394 0134

KEKER & VAN NEST LLP

1^012

PROOF OF SERVICE

Ivan NcSt. LLPT710 Salome Street, San Francisco, Cd.ft.ma 941 11 -

4 II

On July 26, 2001, 1 served the following document®:

SECOND AMENDED COMPLAINT FOR INFRINGEMENT OF U S. PATENT NOS.
SECOND AMENDED ^ ^ ^ ^ ^ ^ ^ ^ 5M

£ shLn or the person authorized to accept courier deliveries on behalf of the addressee.

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Eric L.Wesenberg, Esq.
Mark R. Weinstein, Esq.
Orrick, Herrington & Sutcliffe LLP
1000 Marsh Road
MenloPark,CA 94015

v ay v yptjfs<? bv Blacine a true and correct copy in a sealed envelope addressed as shown

by FedEx CorporatKni. According to that practice, items arc i >

employee for overnight delivery.

John D. Vandenberg, Esq.
James E. Geringer, Esq.
Steven R. Alexander, Esq.
Klarquist Sparkman Campbell Leigh & Whmston
One World Trade Center, Suite 1600
121 S.W. Salmon Street
Portland, OR 97204

1 declare under penalty of perjury under the laws of the State of CaHfomia that the above
is true and correct

Executed on July 26, 2001 , at San Francisco, California. ^ ^

- CMFT , T QF u s PM1 JrW 6,185 .683 BU 6^3,193 t 3,940,504 *» & S. M0.861

2nd AM. CMPLTFOR INFRINGEMENT OF "JJ^JJJ J l64fJ JL

273908.02